CITMA Review June 2026: Keeping your word

This article was first published by The Chartered Institute of Trade Marks Attorney.

The UK IPO delivered three decisions in revocation actions filed by the law firm Kilburn & Strode LLP (the Applicant). In all three cases, the Applicant filed the revocation actions based on s46(1)(a) and s46(1)(b) of the Trade Marks Act 1994, but did not file any written submissions or evidence. All three proprietors defended the revocation actions.

Easy Limo case

The first case is in relation to a series of three trade marks for (1) ‘easy limo’, (2) ‘easylimo’ and (3) the device mark shown above, covering “Chauffeur-driven car and limousine hire services” in class 39. Easy Limo UK Ltd (the Proprietor) filed evidence of use in the form of invoices, end of year accounts, booking confirmations and screenshots from social media and its Trustpilot account. The witness statement submitted in evidence stipulated that £30,000 was spent on Google ads to advertise its “Easy Limo Brand”. The evidence did not contain the advertisements, but it did include invoices that were addressed directly to “Easy Limo”. Therefore, the UK IPO considered it reasonable to infer that the invoices did relate to the advertisements, although the UK IPO did point out that this statement was unchallenged by the Applicant.

Overall, the UK IPO considered the evidence submitted was sufficient to successfully defend the revocation action; therefore, the revocation action failed. It would be interesting to note whether the outcome would have differed had the Applicant challenged the evidence and witness statement.

EasyTerra case

This case concerned the registered trade mark ‘EasyTerra’, owned by EasyTerra Besloten Vennootschap (the Proprietor). The Proprietor claimed use for only some of their services, namely:

• Class 35: Business administration; the aforesaid services relating to the rental and leasing of vehicles.

• Class 39: Mediation regarding the rental and leasing of vehicles; consultancy relating to the rent.

The notion of fair specification was discussed in this case. While the evidence submitted by the Proprietor did appear to establish use of the mark for the provision of administration of online car or vehicle hire price comparison services, as well as the provision of administration of business referral and intermediary services, these specific services were not actually covered by the specification. Therefore, the Proprietor was unable to maintain its class 35 specification.

When considering class 39, the UK IPO discussed the meaning of the term ‘mediation’. The UK IPO clarified that while this term is often used to describe a form of dispute resolution, the term is broad enough to cover the action of bringing about an agreement regarding car rental. Therefore, the Proprietor’s evidence that showed it acting as an intermediary between business partners and customers to assist with car rental agreements is covered by this term, and the Proprietor was able to retain the mark in relation to “Mediation regarding the rental and leasing of vehicles”. Overall, the revocation action was mostly successful, and the Proprietor was only able to maintain the registration for the mediation services.

Easy Avenues case

This case concerned the trade mark EASY AVENUES. Shortly after the revocation action was filed, Easy Avenues Ltd (the Proprietor) filed a TM23, partially surrendering some of its services registered in class 35. Despite this partial surrender being reported to the Applicant, it did not wish to withdraw the revocation action. The Proprietor also proposed an alternative fall-back limitation for the terms “Provision of hotel accommodation” and “Accommodation services” in class 43, which was noted by the UK IPO. Overall, the evidence filed by the Proprietor was sufficient to maintain a reasonable portion of the Proprietor’s specification, but an equal amount was revoked. The balance of success was considered to be roughly equal, and both parties “enjoyed a share of success”.

Use in variant form

The position in the UK is that using a trade mark in a variant form will be considered sufficient and will constitute genuine use if the use does not alter the overall distinctive character of the registered mark.

In all three cases above, the UK IPO examined whether use in a variant form was sufficient to establish genuine use of the marks as registered. In the ‘easy limo’ case, the Proprietor filed evidence in the form of booking confirmations with use of the device mark shown above. The UK IPO found that the limousine graphic, the rectangular frame and the additional level of stylisation did not alter the distinctive character of the three registered marks set out above, especially as the limousine would be considered descriptive of the services provided, and thus reinforces the meaning of the word ‘Limo’. The words ‘Easy Limo’ are the distinctive element of the registered marks and of the mark used by the Proprietor.

In the EasyTerra case, the Proprietor submitted evidence of use containing the device mark shown above, and again this was considered sufficient use of the word mark registration ‘EasyTerra’, as the other elements were considered to be non-distinctive and made no material difference to the distinctiveness of the word mark registration, especially as the dominant element of the device mark was the word ‘easyterra’.

In the Easy Avenues case, the Proprietor submitted evidence of use which contained a variety of different logos, an example of which is shown above. The UK IPO once again confirmed that there was no material difference to the distinctiveness of the mark as registered, as the words ‘easy avenues’ were still the most prominent and independent element of the composite marks.

Ultimately, these cases emphasise that incorporating a registered word mark into a device/logo mark does not preclude a finding of genuine use, provided the registered words remain the dominant and distinctive element and continue to perform their essential function as the dominant indicator of origin.